At the end of August 2014, Bolivia achieved the recognition of ‘Quinoa Real’ (Quinoa Royal) as Denomination of Origin (DO) in the Andean Community (CAN). This means that the DO is also recognized by the other Andean Community Nations i.e. Peru, Colombia and Ecuador.

In 2013 Bolivia celebrated the ‘International Year of Quinoa’ -- declared as such by the United Nations in recognition of Andean indigenous peoples. There are several types of Quinoa (grain crops) which are produced in other Andean countries, but with this recognition, there will be only one ‘Quinoa Real’ and this is the one produced 100% in the Bolivian territory.

According to Decision 486, which is CAN communal regime in Intellectual Property, there are two types of Geographical Indication: DO and Indication of Source. Apart from this, there are certain issues regarding GI that are not common in other jurisdictions such as : such denominations are said to be “... a public good, it belongs inalienably and imprescriptibly to the nation or regional community, as the case may be, and its protection is usually the responsibility of the public authorities or the State...it is considered part of the national heritage, and ultimately under State control" [See 'Some Notes on the Protection of Appellation of Origin in Countries with Emerging Economies: The Andean Community, Symposium on the International Protection of Geographical Indication]. The other one issue is that GIs receive stricter protection like the one received by wines and spirits under TRIPS.

CAN has acknowledged DO to PISCO from Peru and now this is the time for another CAN country to have such a prestige. One might question why there have not been many applications (not even nationally). The consideration could start with the fact that many of the products that may be recognized are either agricultural products or artisan and most of them come from traditional knowledge. That said, the community that have produced the good would need to ask permission to the State to use a name that they believe is theirs in the first place (as in the case of CHIRIMOYA CUMBE, Memoria 1992-1999 INDECOPI, Lima, Perú.) Of course the analysis could also covers other matters such as: bureaucratic process and the lack of monetary resources, to name a few.

The next step: the Bolivian Ministry of Rural Development announced that the next challenge is to apply for a DO in the European Union.

Monday, 29 September 2014

The Colombia Superintendence of Industry and Commerce (SIC) ruled in favour of Coca-Cola in a recent opposition proceedings.

The action brought was against Mr Moreno who applied for the registration of ‘Chevicola’ for beers, sodas, waters and other soft drinks (Class 32 Nice International Classification). By Resolution No. 64160, the opposition proceeded in favour of the international drinks giant and rejected the application for the sign ‘Chevicola’. Mr Moreno appealed to the decision arguing that the trade mark was a combination of words and moreover, the noun ‘Chevi’ was the predominant word and not ‘cola’. That said, there was no likelihood of confusion.

Additionally, Mr Moreno argued that the global appreciation test, i.e. the ‘orthographic, phonetic and conceptual’ differences, allowed ‘Chevicola’ to be a distinguished sign from that of Coca-cola.
According to lawyer Hernán Ruiz, an expert in Colombian IP law, who disagrees with the decision, the appreciation of the two marks was based on what was similar rather than different. He asked: what would the consumer believe? Will they be confused as to the origin? However, here is important to bring into attention "Word trademarks must be compared pursuant to the following rules:... Rule 4. The similarities, and not the differences, existing between the trademarks must be taken into account" .

Lawyer Ruiz extended as to say that he would have found a more ‘justified opposition’ by Chevrolet Chevy (however, in this hypothetical case as the products were dissimilar the action would not be as the same as in the present case. i.e. similar marks for identical products. In such hypothesis, it would be similar marks for dissimilar products and this action could be brought if it is a reputable mark Decision 486 Art 155 (e)).

The article that I read with this information have a headline indicating that ‘the giant is the winner’. It reports that a few months ago, the Coca-Cola Company won another opposition procedures against Postobón Alpina. Do you agree with what the headline implies? what about the decision: is Chevicola similar to Coca-cola? or is SIC giving too much monopoly to the international company over the word 'cola'?

Tuesday, 23 September 2014

The “Federación Nacional de Cafeteros de Colombia” has always been very active in protecting the “Café de Colombia” brand worldwide.

In 2005, Café de Colombia gained the protection as designation of origin (Denominación de Origen Protegida - DOP) in the country; two years later, in October 2007, Colombian Coffee became the first agricultural food product from a country that does not belong to the European Union to receive the EU PGI recognition.

The Federación is now trying to valorise regional varieties of Colombian coffee. This strategy of diversification has been recognised by the Superintendency of Industry and Commerce (SIC), which awarded the DOP to four regional varieties, including Café del Cauca, Huila and Nariño. In September 2014, a fifth variety has been awarded with a DOP by SIC (Resolution No. 50042 of 2014): Café de Santander.

For more information (in Spanish) regarding the area and method of production of Café de Santander: here.

For further account on Colombian GIs: Patricia Covarrubia, 'Colombia: Intellectual Property and Aboriginal Handicraft' in Sarah Sargent (ed), A New Millennium for Indigenous Rights: Challenges and Changes, Buckingham, University of Buckingham Press, 2014 (forthcoming).

Monday, 22 September 2014

Since it amended its law in 2009 in order to make use of the TRIPS flexibilities in favour of developing countries, the Ecuadorian Institute of Intellectual Property (IEPI) has received 32 applications for compulsory patent licences. While some have been refused or abandoned, nine have resulted in the grant of licences for the production of drugs in widespread use (the first three being for Ritonavir, Lamivudine and Abacavir -- antiretroviral drugs that the Ministry of Public Health provides as free treatment to patients suffering from HIV/AIDS).

Nine of the applications to the IEPI for these mandatory licences have been made by a public company Enfarma, which now holds licences to manufacture Sunitinib and, mor recently, Certolizumab. The grant of compulsory licences is seen as a means both of making important medicines more widely available to those who need them and of reducing the dependency of Ecuador on imported medicines.

Source: "Nine Mandatory Licences Allow Greater Access To Medicines In Ecuador" by Maria Augusta Alvarez Moreno (ANEPI, Agencia de Noticias Especializada en Propiedad Intelectual), this being the English translation of the original Spanish text, posted on IP Watch here, from which more information can be obtained.

Sunday, 21 September 2014

IP Tango has received news of a new initiative to help combat trade mark piracy in Brazil: it's the National Directory for the Combat of Counterfeit Trade Marks. This is a virtual space created by the combined efforts of the Brazilian Patent Trade Mark Office (BPTO), the Ministry of Justice, Federal Revenue Service and Military and Federal Police. Apparently it is already up and running and the BPTO has described it as being available to public organisations with powers of enforcement and as being

“an information system with the goal of optimizing customs and administrative proceedings in cases where the public agent identifies indications of trade mark counterfeit”.

Access to the Directory must be requested by the owner of the trade marks or the trade mark attorney, through the filling and sending of the proper forms. Currently, there are no official fees involved, and the BPTO intends to keep the service free.

This blogger is curious to see how the Directory will work. Inevitably comparisons will be made with the EU's Observatory, even though the structure, functions and powers of the two institutions are quite different.

IP Tango will be pleased to hear from readers who have had any experience of the Directory.

Source: "BPTO Launches the National Directory for the Combat of Counterfeit Trademarks", news item from Di Blasi Parente & Associados (here), from which further information is available.

Wednesday, 17 September 2014

IP Tango learns that on 16 and 17 October 2014, the Association of Intellectual Property is holding its 5th Latin American Seminar, "The Value of IP for Innovation and Health", with the the participation of academics, officials, experts and judges from many Latin American countries.

The venue chosen for this year's event is the Universidad del Externado, Bogota, Colombia, whose Departamento de la Propiedad Intelectual has a Boletín virtual for which the relevant website is here.

Anyone interested in attending this event is advised to contact the coordinator, Felix Rozanski, by email at propintel@uexternado.edu.cofor further information.

Friday, 12 September 2014

"We are pleased to inform you that elDIAL.com, along with the ASDIN Intellectual Rights Association, has published in print and in digital format (e-book) a new volume Collection: 2014 Intellectual Property (217 pages).

Intellectual property continues to gain increasing importance in countries like those of Latin America, which have begun to realize the importance of promoting scientific and technological research, cultural industries and productive innovation.
The Collection is the best way to publicize the work of the scientific and technological researchers and scholars of Latin American intellectual property law and notes both the opportunities to promote social and economic development of the region as the major challenges facing to meet this objective.

Thursday, 11 September 2014

"Search engine liability arising from third parties infringing content: a path to strict liability?" is a case note by Marco Rizzo Jurado (Allende & Brea) on PAK v Yahoo Argentina SRL and Google Inc, Civil Court of Appeal, Division ‘J’, Argentina, City of Buenos Aires, 31 August 2012. This article has just been published in the September 2014 issue of the Journal of Intellectual Property Law & Practice (JIPLP). According to its abstract

The Civil Court of Appeal, Division ‘J’ of the City of Buenos Aires reversed the first instance court decision and ordered Google and Yahoo! to pay amounts of AR$75 000 and AR$15 000, respectively, plus interest after finding the defendants liable for moral damage caused to a famous Argentinian actress by having her name and image associated with web-pages containing sexual, erotic and pornographic content. This content appeared listed in Google and Yahoo! search results when her name was entered in the search bar. They also ordered the defendants to eliminate the actress's name and image from the search results. The Civil Court of Appeal considered that search engine ‘spiders’ and their activity are ‘risky’ themselves and, therefore that the regime of strict liability for the resulting damages should be applicable. The defendants filed an extraordinary appeal which has been recently rejected.

JIPLP, which is edited by this blogger and published by Oxford University Press, is always willing to consider articles and case notes on law and practice from Latin America. If you are interested in submitting one for consideration, please contact me, Jeremy, at jjip@btinternet.com

Wednesday, 10 September 2014

In June 2014 the Civil Chamber of Panama's Supreme Court of Justice, in a majority decision, ordered Bridgestone Corporation and Bridgestone Licensing Services Inc to pay Muresa and Tire Group of Factories Ltd Inc damages of $5 million plus $431,000 in costs and court expenses following a finding that the filing by Bridgestone of a trade mark opposition was made in bad faith, leading to the cessation of the commercialisation of products covered by the RIVERSTONE trade mark.

The decision was supported by the filing of evidence to the effect that Muresa had suffered commercial damage as it had to use other marks, including marks of inferior quality, in order to supply market demand.

This blogger is not familiar with any other instances of damages being filed for wrongful opposition and wonders if readers can enlighten him: is this something that extends beyond Panama?

Source: "Bridgestone ordered to pay $5 million in damages in RIVERSTONE case", by Marissa Lasso De La Vega (Alfaro Ferrer & Ramirez, Panama), published in the World Trademark Review.

Tuesday, 9 September 2014

The customs authorities of the Dominican Republic are reported to have recently destroyed 45,986 counterfeit articles bearing the LOUIS VUITTON, CHANEL and LACOSTE trade marks, all of which were apparently intended for the Dominican market. While this news is recent, the seizures aren't: it seems that the articles were actually seized over a period of three years through customs surveillance.

While the Dominican authorities did not initially enforce obligations under the TRIPS Agreement or the local Industrial Property Law, the enforcement of border measures was kick-started following implementation of the CAFTA-DR (or DR-CAFTA, as it is understandably known locally, this being the Central America-United States Free Trade Agreement with the Dominican Republic), signed in 2004.

Monday, 8 September 2014

Once again this year (previously reported here) the Peruvian National Institute for the Defence of Competition and Protection of Intellectual Property (INDECOPI) has reaffirmed that “ illegal reproduction or sale of any domestic or foreign production, could be fined up to 180 tax units (ITU).”

INDECOPI’s statement came after the premiere of a national film called 'Perro Guardián' (Watchdog) which has been selected for the International Film Festival in Montreal 2014. The Peruvian Institution discourages the population to be part of illegal products which demoralizes creators and producers - it also hurts the economy. It asked the population to only “access legal and original products and services, refusing piracy in all its forms”.

Several times INDECOPI, through the Directorate of Copyright (DDA), has coordinated actions and campaigns seeking to combat piracy and so enforcing copyright. INDECOPI is working in this with the Commission to Combat Customs Crimes and Piracy (CLCDAP), the Prosecutor's Office and the National Police of Peru. INDECOPI reports that this type of campaigns does “have good results. For example, the movie ‘Viejos Amigos’, released a few weeks ago, sets record attendance in theatres”.

Wednesday, 3 September 2014

The International Trademark Association's latest INTA Bulletin trumpets excitedly that, in a continuing effort to strengthen relationships with associations and IP offices throughout the world, INTA CEO Etienne Sanz de Acedo has signed a Memorandum of Understanding (MOU) with Colombia's Superintendent of the Superintendency of Industry and Commerce (SIC), Dr Jose Luis Londoño.

In a joint press release, SIC and INTA said that the MOU would increase cooperation between the two organizations and facilitate work to improve trade mark protection for Colombian and international brand owners.

More details of the MOU, and about the latest adventures of the INTA in Latin America, can be obtained from the above link.